Alta Vista Cannot Use Its Name on Products or Services, MA Judge Says

Software Law Bulletin, Vol. 10; No. 4; Pg. 81, April 1997


Calling the defendant's efforts to comply with a trademark licensing agreement "a classic case of too little, too late," a federal judge in Boston has barred AltaVista Technology Inc. (ATI) from using the AltaVista mark on any products or services. The preliminary injunction order also bars ATI from maintaining a link to plaintiff Digital Equipment Corp.'s popular Alta Vista search site, unless ATI clearly states that it is not affiliated in any way with Digital's site. Digital Equipment Corp. v. AltaVista Technology Inc., No. 96-12192-NG (D MA, March 12, 1997). Index terms: trademarks, Internet.

Prior to ruling on the merits, U.S. District Judge Nancy Gertner found that her court had personal jurisdiction over the defendant, which is based in California.

Plaintiff Digital Equipment Corp. (DEC) uses the mark "Alta Vista," which means "high view" in Spanish, for its Internet search engine, which allows users to enter keywords to search more than 32 million Web pages and 14,000 Usenet news groups. The service was launched in December 1995 and now receives millions of "hits" each day.

According to the complaint, in March 1996 defendant ATI, which develops software used in the creation of Web sites, entered into an agreement assigning DEC all rights in the Alta Vista mark. At the same time, DEC agreed to license the mark back to ATI for use only in its full corporate name and as part of ATI's Internet domain name.

The complaint alleges that ATI has breached the agreement by using the Alta Vista mark without the word "Technology," as required by the agreement; using the mark "Alta Vista" in connection with the sale of software; and maintaining a link to DEC's Alta Vista Web site that allows users to enter a search query without leaving ATI's page.



Judge Gertner first said ATI is subject to jurisdiction in Massachusetts. Although simply maintaining a World Wide Web site accessible from Massachusetts would not be sufficient contact to find jurisdiction, she said, she emphasized that this case involves more -- specifically that ATI entered into a contract with Digital, a Massachusetts corporation, and that its alleged acts of infringement have been felt in Massachusetts.


ATI's behavior, especially after it entered the license agreement, amounted to the "conduct of business in Massachusetts" sufficient for the exercise of jurisdiction, the judge said. She noted that ATI repeatedly redesigned its Web page to look more like Digital's, believing that the trademark license agreement gave it the right to capitalize on Digital's investment in the Alta Vista search engine.

"Using the Internet under the circumstances of this case is as much knowingly 'sending' into Massachusetts the allegedly infringing and therefore tortious uses of Digital's trademark as is a telex, mail, or telephonic transmission; the only difference is that the transmission is not 'singularly' directed at Massachusetts, in the way that a letter addressed to this state, or a telephone or fax number with a Massachusetts area code would be," she said.

Subjecting ATI to Massachusetts jurisdiction does not violate its constitutional rights, she concluded. Although ATI personnel will be inconvenienced by having to travel from California, she said, ATI should have anticipated that this might occur.


The Merits

Turning to the merits, Judge Gertner said Digital is likely to prevail, and is therefore entitled to a preliminary injunction. She rejected ATI's assertion that the license agreement allows the uses which ATI has made of the mark. In essence, she pointed out, ATI's page has become an Internet search service from which users can access Digital's Alta Vista search engine.

As evidence of actual confusion, she cited a Wall Street Journal article from October 1996 which said that thousands of Internet users accessed ATI's site believing it to be Digital's, and that advertisers had purchased space on ATI's site while thinking they were buying space on Digital's site.

Digital is represented by Shepard M. Remis and Victoria C. DeMaret of Goodwin, Procter & Hoar in Boston.

Editor's Note: this case has attracted attention because of its potential to shed light on an as-yet-untested question of Internet law -- whether and to what extent a World Wide Web link can result in trademark or copyright infringement liability. In the instant case, the court noted that ATI deliberately tried to make its site look as much as possible like Digital's. But even without such purposeful efforts, infringement could occur, if a link is maintained in such a way that users believe one Web site is sponsored by or affiliated with the linked site.

The case also underscores the increasing importance of advertising on the Internet. The crux of Digital's complaint was that advertising space on its Web site would be worth less if people got it confused with ATI's, and that advertisers had bought space on ATI's page, believing that it belonged to Digital.

A Scottish court recently held that one newspaper's use of a second paper's headlines to link to the second paper's stories could constitute copyright infringement. The plaintiff in that case complained that a direct link to the stories would allow users to bypass its introductory page, where it planned to sell advertising. The case is Shetland Times Co. Ltd. v. Wills (Scotland Court of Sessions).


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